WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Parfumeries Fragonard v. Djordje Markovic
Case No. D2017-1179
1. The Parties
The Complainant is Les Parfumeries Fragonard of Grasse, France, represented by Inlex IP Expertise, France.
The Respondent is Djordje Markovic of Vranje, Serbia, self-represented.
2. The Domain Name and Registrar
The disputed domain names <aromafragonard-mails.com> and <aromafragonard-newsletter.com> (collectively the “Disputed Domain Names”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Response was filed with the Center on July 15, 2017.
On July 17, 2017, following the Respondent’s offer, included in the Response, to transfer the Disputed Domain Names to the Complainant, the Center invited the Complainant to consider submitting a request for suspension of the proceedings to explore a possible settlement between the Parties by July 19, 2017. The Complainant requested information about the settlement procedure under the Policy on July 18, 2017. The Center did not receive a suspension request from the Complainant. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on July 20, 2017. On the same date, the Complainant confirmed that it did not wish to suspend the proceedings and that it requested a decision ordering the transfer of the Disputed Domain Names.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 27, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a French company manufacturing and selling perfumery and cosmetics products and is the owner of several registrations of the word trademark FRAGONARD in numerous jurisdictions, such as the International Registration no. 312110 registered on April 14, 1966 claiming in particular perfumery products in class 3, based on a French registration and designating numerous countries such as Switzerland, Germany, Italy, Austria, etc.
The Disputed Domain Names were both registered by the Respondent on April 26, 2017. Both Disputed Domain Names are currently inactive and according to the Complainant, the Disputed Domain Name <aromafragonard-newsletter.com> was used to send newsletters in the name of “Aroma Fragonard”.
5. Parties’ Contentions
The Complainant in essence contends:
- That the trademark FRAGONARD is well known for perfumes and that these products are distributed throughout the world;
- That the trademark FRAGONARD was adopted in 1926 as an (authorized) tribute to the famous painter Jean-Honoré Fragonard who (like the Complainant) came from the city of Grasse in France;
- That the Disputed Domain Names reproduce identically and prominently the Complainant’s prior trademark FRAGONARD which attracts the consumer’s attention;
- That the combination with the terms “aroma” as well as “newsletter” or “mails” accentuate the likelihood of confusion since those generic terms are understood in their dictionary meaning by Internet users in several languages;
- That the Disputed Domain Names are thus confusingly similar to the Complainant’s trademark FRAGONARD because Internet users will associate the Disputed Domain Names with the Complainant’s trademark, and mistakenly believe that the Respondent’s website offers news and information about the Complainant’s products;
- That the Respondent has no rights or legitimate interests in the Disputed Domain Names since he must have been aware of the Complainant’s products and trademarks when registering the Disputed Domain Names;
- That the Complainant never authorized the Respondent to use the FRAGONARD trademark, and that the Respondent has no right nor activity under this name;
- That consequently the Respondent has no rights or legitimate interests in the Disputed Domain Names;
- That considering the well-known character of the trademarks FRAGONARD, it is not conceivable that the Respondent registered the Disputed Domain Names by chance or coincidence, because a simple Internet search would show that FRAGONARD is a well-known mark in the field of perfumes;
- That the Respondent used the Disputed Domain Name <aromafragonard-newsletter.com> in bad faith by sending, via an e-mail address created under this domain name (i.e., “[…]@aromafragonard-newsletter.com”) newsletters (in the name of a “counterfeiting” company “Aroma Fragonard”) to the Complainant’s business contacts;
- That many of the Complainant’s customers and professional contacts forwarded the concerned newsletter to the Complainant wondering whether the Complainant was involved and/or enquiring on possible counterfeiting acts;
- That some recipients of the newsletter who are not customers of the Complainant even send to the Complainant e-mails asking not to receive any more news from the Complainant even though the Complainant was not the sender of those message (Annex 10 to the Complaint);
- That therefore the Respondent registered and used the Disputed Domain Names in bad faith.
The Respondent filed the Response consenting to the remedy requested by the Complainant and agreeing to transfer the Disputed Domain Names to the Complainant or to cancel the Disputed Domain Names.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
This Panel considers that the Respondent’s genuine unilateral consent to the remedy requested by the Complainant provides a basis for an order for transfer or cancellation without consideration of the elements of paragraph 4(a) of the Policy. As was noted by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, when the complainant seeks the transfer of the disputed domain name, and the respondent consents, the panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules (Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207). See also section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
The Panel has noticed that the Complainant requested the transfer of the Disputed Domain Names, and that the Respondent stated that it consented to the remedy requested by the Complainant and agrees to transfer or cancel the Disputed Domain Names. Because the Complainant requested the transfer (and not the cancellation) and the Respondent agrees, the Panel orders the transfer of the Disputed Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <aromafragonard-mails.com> and
<aromafragonard-newsletter.com>, be transferred to the Complainant.
Date: August 2, 2017